Review of major 2006-07 decisions and their ramifications
Friday, June 15, 2007
Loyola Law School Campus, 919 Albany Street, Los Angeles, California
The United States Supreme Court has probably rendered more patent law decisions this term than in its history and it seems clear that the Court has more to do. This Special IP Focus event will bring together a group of experts – from both the academy and the practice - to help understand how these decisions impact on the day-to-day practice of patent law.
Main Attractions
(cases the Supreme Court decided this Term)
KSR INTERNATIONAL CO. v. TELEFLEX INC. ET AL.
KSR may be the most controversial patent decision this Term and possibly the most far reaching. Some critics predict that it will set the US patent system back at least 50 years, perhaps returning the “flash of creative genius” standard repudiated by the Supreme Court in Graham. Others suggest is will be “business as usual” for Patent Examiners, although they may be less fearful that their obviousness rejections will be overturned by the Federal Circuit.
Rather than debate the wisdom of the decision, the panel will be examine it from the perspective of how to defend and attack a patent based on obviousness; how to draft a patent application & overcome an obviousness rejection by the USPTO; and when and how to use of KSR in reexamination practice.
MICROSOFT CORP. v. AT&T CORP.
This almost unanimous decision may have extremely broad implications, not only for the U.S. software industry, but for all US companies competing on the world market as it appears to permit U.S. companies to export “abstract items,” such as master CD-ROMs, blueprints, design tools, schematics and templates of components of inventions covered by a U.S. patent, to foreign manufacturers for assembly into products sold abroad. It even raises serious questions as to the patentability of such “abstract” technology.
EBAY INC. ET AL. v. MERCEXCHANGE, L. L. C.
The panel will explore how the lower courts have been implementing eBay, including under what circumstances are permanent injunctions still being granted; when are they being denied and why; are future royalty payments being required and, if so, are they based on future willful infringement; and how, if at all, the eBay decision has affected the granting of preliminary injunctions.
MEDIMMUNE, INC. v. GENENTECH, INC.
This program will focus on the impact of the decision on licensing practices and whether licensors will be able to contractually limit the risk of having the validity of a licensed patent being challenged by a current licensee. The panel will also discuss licensing issues that may be decided next term in Quanta v. LG Electronics (first sale doctrine/patent exhaustion (cert. pending))
Coming Attractions
(cases & issues the Supreme Court will most likely decide next Term)
LABORATORY CORPORATION OF AMERICA HOLDINGS, DBA LABCORP v. METABOLITE LABORATORIES, INC.
The Court initially granted certiorari to determine whether the patent claims were invalid on the ground that they improperly claimed “a monopoly over a basic scientific relationship.” The Court has dismissed the writ as improvidently granted. Three Justices dissented, opining that “a decision from this generalist Court could contribute to the important ongoing debate, among both specialists and generalists, as to whether the patent system, as currently administered and enforced, adequately reflects the “careful balance” that “the federal patent laws. . . embody.”
It seems unlikely that the Court decided that patentable subject matter was not important enough for them to examine; it seems more likely that the Court decided to wait for something less scientific … perhaps a case involving a claim for a method for selling magazine subscriptions or something similar.
AMGEN v. HOECHST MARION ROUSSEL
While a slim majority of the Federal Circuit denied the Petition for Rehearing En Banc, there were six separate opinions, including one from newly appointed Judge (former Professor) Kimberly Moore. It’s been suggested that these six opinions leave the impression that de novo review of claim construction may be on its way out or that the Supreme Court may again need to resolve a major rift within the Federal Circuit. After extending the deadline for filing a writ of certiorari from January 29 to March 22, the Supreme Court eventually denied certiorari in the case indicating that the Court is not quite ready to step in … but it’s probably just a matter of time.
This program will be presented in a courtroom-in-the-round setting, especially conducive to interaction among the panelists and between them and the audience. Time has been allotted for audience participation following the panel’s discussion of each case.
This Event is being sponsored, in part, by Orrick, Herrington & Sutcliffe LLP